Facts

Founded in 2012, Teetex LLC designs, manufactures and sells bedding textiles. Wholesale customers approach Teetex to design the textile products, select the factories to manufacture the products and oversee the manufacturing process. To manufacture the product, Teetex works primarily with Chinese factories. Until 2016, Jiajie Zhu held a 70 percent ownership in Teetex which he subsequently sold in 2016. Two years later, in 2018, Zhu formed his own textile company: Zeetex. Teetex filed a trademark infringement action against Zhu and Shanghai Tianan Textile (STA) Co. on October 13, 2020.

PLAINTIFF'S CONTENTIONS: Plaintiffs contended that the Zeetex name is almost identical to Teetex and that the logos are correspondingly similar. Moreover, Zeetex's mark is confusingly similar to Teetex's mark particularly because it is used in the same segment of the textile market. Accordingly, this has led to confusion amongst Teetex's customers. From 2012 to 2016, STA acted as Teetex's agent in China and handled communications with Teetex's Chinese suppliers. Plaintiff alleged that in 2014, it entered into an agency agreement with STA which provided that STA would protect the exclusive rights and designs of Teetex. In 2015, STA increased the fee it charged for its services and Teetex then sought to end its relationship with STA. Thereafter, plaintiff alleged that STA breached the agency agreement by disclosing Teetex's confidential and proprietary information to the Zhu defendants. Also, the names are phonetically similar and there is an overlap in the marketing channels as both parties are in the same industry and participate in some of the same trade shows.

DEFENDANT'S CONTENTIONS: Defendant contended that Teetex has no evidence of likelihood of confusion as it had provided no evidence of actual consumer confusion; none of the identified Teetex customers were actually confused. Moreover, as "tex" is a suffix commonly used in the textile industry, that Teetex is descriptive entitled it to little trademark protection. As such, Teetex is not descriptive as it did not define the qualities of the product. At best, Teetex had not provided evidence establishing widespread industry recognition of its mark. Importantly, plaintiff also conceded that was no evidence of actual confusion. Also, defendant argued that the marks were visually dissimilar. And, finally, there was no intent to deceive; Zhu informed customers about his former affiliation with Teetex and explained that Zeetex was a different company.

Result

The court granted summary judgment in favor of only the Zhu defendants (as STA had yet to be served) on plaintiff's trademark infringement claims.